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Decision Submission
| Decision ID |
DE-0200002 |
| Case ID |
DN-0200003 |
| Disputed Domain Name |
www.banyantree.com.hk |
| Case Administrator |
Iris Wong |
| Submitted By |
Paul Stephenson |
| Participated Panelist |
Paul Stephenson |
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The Parties Information
| Claimant |
Banyan Tree Limited |
| Respondent |
Home Essentials (H.K.) Limited |
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Procedural History
On 10th July 2002 the Comlainant filed an application on Form A to
the Hong Kong International Arbitration Centre (HKIAC) claiming that
it is the rightful owner of the domain name <www.banyantree.com.hk>
Materials in support of the claim were filed on the respondent, Home
Essentials (H.K.) Limited, by registered post on 3rd September 2002.
A letter dated September 6, 2002 was sent by Christopher Exline to
the Complainant which effectively acknowledged receipt of the Complaint.
This letter was forwarded to the HKIAC by the Complainant.
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Factual Background
For Claimant
- The Complainant has submitted documentary evidence consisting of
advertisements, invoices, letterheading and copies of a Trade Mark
Registration Certificate to show that at least since 1990, it has
been trading under the name 'Banyan Tree' in Hong Kong and has been
using a trade mark that contains those two words which has been registered
in class 35 dating with effect from 19th July 2000. The services of
interest taken from trade mark registration certificate no. B07527
of 2002 are in respect of the "retail and wholesale of furniture,
mirrors, picture frames, textiles, cushion covers and curtains (textile
goods), bed covers, table covers, carpets, rugs, mats and matting,
games, playthings, decorations for Christmas trees; all included in
Class 35".
- The Complainant's letterheading indicates that they operate from
showrooms situated in Princes' Building in Central and from Repulse
Bay.
For Respondent
The Respondent by letter dated September 6, 2002 addressed to the Complainant
asserted that the Complaint was "frivalous" and "constitutes
harrassment". No justification was given for such assertions. The
Respondent did not reserve the right to submit any additional arguments
or otherwise indicate that a Response was to be filed. I therefore take
it that the said letter dated September 6, 2002 was the total response
to be filed by or on behalf of the Respondent.
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Parties' Contentions
Claimant
I consider the evidence provided by the Complainant provides a prima
facie claim to its being the true owner of the trade mark BANYAN TREE
at least in respect of the goods and services recited in paragraph
1 above and, consequently, they can lay an ex-facie claim to ownership
in Hong Kong of a domain name that consist of, or contains, the word
'banyantree', or, at least, validly raise an objection to another's
registration of such a domain name.
Respondent
The Respondent has chosen not to file any evidence in this matter
either to refute the assertions made by the Claimant or otherwise
to justify their claim to registration of the domain name <www.banyantree.com.hk>.
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Findings
Identical / Confusingly Similar
N/A
Rights and Legitimate Interests
I do not know the trading activities or intended trading activities
of the Respondent although in the light of the evidence filed by the
Complainant there is at least a possibility that the Respondent's
activities may constitute passing off particularly (but not necessarily)
if those activities are in the same field as that of the Complainant.
The Complainant can assert that there is a potential for the Respondent
misrepresenting that they are connected with the Complainant in the
course of trade when no such connection exists. This assertion would
rest on the proposition that a member of the trade or the public who
accesses the domain name <www.banyantree.com.hk> would expect
to go to the web site of the Complainant but instead is directed to
the web site of the Respondent. No evidence has been provided by the
Respondent to contradict this potential for misrepresentation.
Bad Faith
The Respondent has failed to answer any of the assertions made and
evidence provided by the Complainant. This is not bad faith per se,
but the Claimant has, in the absence of any submission to the contrary,
justified a claim to ownership of the domain name <www.banyantree.com.hk>.
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Status
Domain Name Transfer
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Arbitration Decision
From the information made available to me by the parties, my decision
is that the Domain Name <www.banyantree.com.hk> shall be transferred
to the Complainant.
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